How can an applicant overcome a rejection based on lack of ornamentality?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

An applicant can overcome a rejection based on lack of ornamentality under 35 U.S.C. 171 by providing evidence that demonstrates the ornamental nature of the design. The MPEP outlines several ways to overcome such a rejection:

• Submit an affidavit or declaration under 37 CFR 1.132 explaining which features of the claimed design were created to enhance saleable value or increase demand for the article.
• Provide advertisements that emphasize the ornamentality of the article embodying the claimed design.
• Show evidence that the appearance of the design is ornamental through its distinctness from prior art or attempts to develop consumer recognition.
• Submit a statement from a company representative explaining the motivating factors behind the design’s creation.
• Present alternative designs that could have served the same function, indicating that the appearance was not purely dictated by function.
• Establish that the article’s design is a ‘matter of concern’ due to its visibility at some point between manufacture and ultimate use.

It’s important to note that attorney arguments alone are not a substitute for evidence to establish the ornamentality of the claim.